Sections 3 and 5 of the Trade Marks Act 1994 lay down the main grounds why your trade mark will not be registered, before deciding to make an application to register your trade mark you need to consider…….
Is my mark capable of graphic registration?
This is relatively straightforward (if your mark is a word or picture mark). For the purposes of the formal application at the Intellectual Property Office you will need to be able to reproduce your mark in an 8cm by 8cm square.
Can my mark distinguish goods/services between undertakings?
If your mark is descriptive, customary or a common place word, the likelihood is the application for registration will fail. The more distinctive your mark, the better the chances of registration. Examples of distinctive and non-descriptive trade marks include Coco Cola, Nike, Kodak, Pepsi, Google and Nokia etc. If your mark is descriptive the addition of images, a logo or a graphic may give it that additional distinctiveness it requires.
However a non distinctive mark may be registered if it can be proved that the mark has acquired a distinctive character over time/use (i.e. it has been used in trade by a proprietor for a considerable number of years therefore customers recognise the mark as originating for a particular trade source.)
Will my mark conflict with an earlier registered mark?
The Trade Marks Act 1994 makes reference to such a situation as the ‘Relative Grounds for Refusal’. If your proposed trade mark is similar to an earlier registered mark, it is very likely that the owner of the earlier registered mark will oppose your registration on the grounds that the registration of your mark would lead to confusion amongst consumers and damage the business attached to the earlier mark.
Think you may have a trade mark capable of registration? Contact us at Info@lawdit.co.uk
By Rehana Ali, a paralegal @lawdit that may be contacted at email@example.com
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